I. Introduction and Governing Law
The primary law governing trademarks and service marks in the Philippines is Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines (IP Code), as amended. The law is implemented by the Intellectual Property Office of the Philippines (IPOPHL). A trademark is defined as any visible sign capable of distinguishing the goods of an enterprise, while a service mark is used to identify and distinguish the services of one entity from another.
II. Registrability and Acquisition of Rights
Rights to a mark are acquired through registration with the IPOPHL. To be registrable, a mark must be distinctive and not fall under any of the absolute grounds for refusal under Section 123 of the IP Code. These prohibitions include marks that are: (a) generic or descriptive; (b) contrary to public order or morality; (c) identical or confusingly similar to an earlier registered mark or well-known mark; and (d) primarily a surname or a geographic name, unless it has acquired distinctiveness through use.
III. The Registration Process
The process involves filing an application with the Bureau of Trademarks (BOT) of IPOPHL, which will undergo formality examination, substantive examination, and publication for opposition. Any person who believes they would be damaged by the registration may file an opposition within thirty (30) days from publication. If no opposition is filed or if it is resolved in favor of the applicant, a certificate of registration is issued.
IV. Rights Conferred by Registration
Registration grants the owner the exclusive right to prevent all third parties from using, without consent, identical or similar signs for identical or similar goods/services where such use would result in a likelihood of confusion. The protection for registered marks lasts for ten (10) years from the filing date and may be renewed indefinitely for successive ten-year periods.
V. Infringement and Determining Likelihood of Confusion
Trademark infringement is committed when a person, without the consent of the registrant, uses in commerce an identical or confusingly similar mark likely to deceive or cause confusion. The test is “dominancy,” focusing on the similarity of the prevalent features of the marks that might cause confusion, rather than a side-by-side comparison. Factors considered include the mark’s visual, aural, and conceptual similarity, the relatedness of the goods/services, and the strength of the senior mark.
VI. Well-Known Marks
The IP Code provides special protection to well-known marks, whether registered in the Philippines or not. Under Section 123.1(e), a mark that is considered well-known in the Philippines cannot be registered by another if it is likely to cause confusion, connection with the well-known mark owner, or dilution of its distinctive character. The notoriety of the mark is determined by the relevant sector of the public, not the general public.
VII. Defenses to Infringement
Available defenses include, but are not limited to: (a) the use is a fair use of a descriptive term (e.g., for purposes of identifying compatibility); (b) the use is a non-trademark use (e.g., for parody, news reporting); (c) the plaintiff’s mark is generic, descriptive, or functional; (d) laches or acquiescence; and (e) the defendant has prior and continuous use of an identical or similar mark for identical or similar goods from a date prior to the plaintiff’s registration or use.
VIII. Related Actions: Unfair Competition
Distinct from but often pleaded with infringement, unfair competition under Section 168 of the IP Code involves passing off one’s goods or services as those of another through any means creating confusion, regardless of whether the registered mark is used. It protects against deceitful practices in the market and protects the consuming public.
IX. Practical Remedies
Upon discovery of infringement or a conflicting application, the following remedies and actions are available: (a) Opposition: File a Notice of Opposition against a pending application during the publication period. (b) Cancellation Action: Petition for the cancellation of a registered mark before the BOT on grounds specified under the IP Code (e.g., it is generic, fraudulent, or confusingly similar to a prior mark). (c) Administrative Complaint: File a complaint for infringement before the IPOPHL’s Bureau of Legal Affairs (BLA), which can issue cease and desist orders, impose administrative fines, and award damages. (d) Civil Action: File a civil case for infringement and/or unfair competition in regular courts to recover damages, obtain injunctive relief, and secure the destruction of infringing materials. (e) Criminal Action: Initiate a criminal complaint for infringement or unfair competition, which may result in imprisonment and fines. (f) Customs Recordation: Record the trademark with the Bureau of Customs to enable border measures, including monitoring, detention, and seizure of counterfeit imported goods. (g) Demand Letter: Prior to litigation, a cease-and-desist demand letter should be considered to resolve the matter amicably and establish a record of good faith. Timeliness is critical; delay may weaken claims and bolster laches defenses. All actions require robust evidence of ownership, the infringing act, and, for damages, proof of actual loss or the infringer’s profits.
